Chief Judge Sleet Grants Stay Pending Not-Yet-Instituted IPR

Chief Judge Sleet has granted a stay of litigation pending Inter Partes Review of the patents-in-suit in the U.S. Patent and Trademark Office in a case in which the PTAB has not yet decided whether to grant the IPR petitions. Judge Sleet first concluded that the plaintiff is unlikely to suffer undue prejudice as a result of the stay. The defendants filed their IPR petitions well within the one-year timeframe required by statute and the “timing of the request for stay suggests no dilatory motive” because it was filed less than two weeks after the IPR petitions. It was also persuasive to Judge Sleet that the plaintiff was a non-practicing entity, which “by its own admission, does not compete with the defendants.” Canatelo LLC v. Axis Comms. AB, et al., C.A. No. 13-1227-GMS, Order at 2 n.2 (D. Del. May 14, 2014).

Judge Sleet next concluded that the issues before the court will be simplified should the Patent Trial and Appeal Board grant the defendants inter partes review. In this regard, His Honor considered “statistics [that] indicate that it is very likely the PTAB will grant the IPR petitions.” Ultimately, “Should the PTAB deem the patents-in-suit unpatentable or narrow their scope, the court’s resources will be conserved by expending fewer resources on claim construction or avoiding the claim construction process altogether. Should the claims survive the IPR process, the court will still benefit from the PTAB’s expertise.” Id. at 2 n.3.

Finally, Judge Sleet explained that the case is at a very early stage, thus weighing in favor of a stay: “Staying a case in its early stages advances judicial efficiency and prevents the court and the parties from expending resources on claims that may be rendered invalid. Here, the parties have yet to conduct any discovery and no scheduling order has been entered.” Id. at 2 n.4.

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